Whose Invention Is It? Joint Development, Background IP, and the Ownership Default Nobody Wants
By Casey Scott McKay ·
Two companies collaborate, something valuable results, and nobody wrote down who owns it. The default rules that then apply are worse than almost any allocation the parties would have negotiated. This article explains what joint ownership actually means across patent, copyright, and trade secret law, why each co-owner may practice and license independently under patent law without accounting, why copyright imposes a duty to account that patent does not, and why the resulting deadlock is the outcome nobody wanted. It covers inventorship and authorship as legal questions rather than credit questions, the background and foreground distinction that every agreement needs, field-of-use allocation as the usual answer, improvements and grant-backs, prosecution and enforcement control, publication, and the exit provisions. It closes with universities and government funding, where different rules apply.
IP and Technology > General IP | Article | Published 12 October 2024 - Updated 25 June 2025 | Casey Scott McKay - marksy.us
Summary. Two companies collaborate, something valuable results, and nobody wrote down who owns it. The default rules that then apply are worse than almost any allocation the parties would have negotiated. This article explains what joint ownership actually means across patent, copyright, and trade secret law, why each co-owner may practice and license independently under patent law without accounting, why copyright imposes a duty to account that patent does not, and why the resulting deadlock is the outcome nobody wanted. It covers inventorship and authorship as legal questions rather than credit questions, the background and foreground distinction that every agreement needs, field-of-use allocation as the usual answer, improvements and grant-backs, prosecution and enforcement control, publication, and the exit provisions. It closes with universities and government funding, where different rules apply.
Keywords: joint development, background intellectual property, foreground intellectual property, joint ownership default, co-inventor rights, undivided interest, duty to account, joint authorship, inventorship correction, derivation, field of use allocation, improvements, grant-back, publication rights, exclusivity, prosecution control, enforcement standing, exit and wind-down, university collaborations, government funding
This is premium Marksy content — the full document is available to subscribers.